1505.01(b) Processing Amendments to §§1(a), 44, and 66(a) Applications in Cases Where No Opposition Has Been Filed and a Registration Certificate Has Not Yet Issued
Amendments filed after publication will be reviewed by paralegal specialists in the Office of the Deputy Commissioner for Trademark Examination Policy. If necessary, the application will be withdrawn from issue to ensure that the mark does not register before the amendment has been considered. The paralegal specialists will consult with an attorney, if necessary.
1505.01(b)(i) Acceptable Amendments
If an amendment is acceptable and does not require republication of the mark, the paralegal specialist will enter the amendment and the mark will continue on to the scheduled issue date. See TMEP §1505.03(b) for examples of amendments that do not require republication.
If the amendment is acceptable and republication is required, the paralegal specialist must telephone or e-mail the applicant and inform the applicant that the amendment is acceptable, but requires republication of the mark. If the applicant wishes to pursue the request, the paralegal specialist must enter a Note to the File in the record that the proposed amendment has been accepted, that republication is required, and that the applicant has agreed to the republication. The paralegal specialist will then enter the amendment and set a new publication date. A new notice of publication will be issued. See TMEP §1505.03(a) for examples of amendments that require republication.
1505.01(b)(ii) Unacceptable Amendments
If the paralegal specialist determines that an amendment is unacceptable, the paralegal specialist must provide written notification to the applicant, explaining why the amendment is unacceptable and advising the applicant that: (1) the application will be returned to processing without entry of the requested amendment; and (2) applicant’s only recourse is to file a petition to the Director requesting that jurisdiction be restored to the examining attorney to consider the merits of the amendment. 37 C.F.R. §§2.84, 2.146. Any petition to the Director must be filed within six weeks of the publication date to ensure that it is timely processed. Thereafter, any request for amendment must be filed pursuant to §7 of the Trademark Act, 15 U.S.C. §1057.